Blackletter

On July 3rd, the Washington Redskins announced that it would review its team name after nearly two decades of vigorously fighting legal challenges by Native Americans to keep it. Two registration cancellation actions filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office[1] culminated in Pro-Football, Inc. v. Blackhorse, a decision by a federal district court in Virginia on July 8th, 2015, that the “REDSKINS” name and federally registered trademark was considered disparaging of Native Americans under Section 2(a) of the Lanham Act and therefore not eligible for federal trademark registration under U.S. trademark law. While the Redskins were appealing their registration cancellation decision to the Virginia federal appellate court, a landmark Supreme Court case, Matal v. Tam, held that the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional for violating First Amendment free speech rights when it reviewed a trademark registration refusal by the USPTO of th

Tom Dunlap sits down with Gerald LeMelle of Dunlap, Bennett & Ludwig about immigration in the time of COVID and what the new executive order means for employees and students alike. We also hear from Natalie Cressey, a Canadian student attending Boston University and how this executive order will impact her.

In the first half of 2020, several significant decisions further shaped the course of trademark law, with rulings from the Supreme Court and circuit courts impacting USPTO proceedings, as described below: Romag Fasteners v. Fossil (U.S. Supreme Court): In April, the U.S. Supreme Court clarified what a plaintiff in a trademark infringement suit is required to prove to be granted a defendant’s ill-gotten profits. Romag Fasteners, Inc. and Fossil, Inc. signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag later discovered that Chinese factories producing Fossil products were using counterfeit Romag fasteners and sued Fossil for trademark infringement under 15 U.S.C. § 1125(a). The district court relied on Second Circuit precedent and denied Romag’s request for an award of profits because the jury did not find that Fossil had acted willfully. Other circuits had also required a showing the defendant willfully infringed a plaintiff’s trademark to win a profits remedy. The Supreme Court, face

Today we're going to talk about the TCPA and a new ruling from the FCC. The Federal Communications Commission, the FCC has just approved two new safe harbors from liability for blocking unwanted robocalls. This is good news for consumers. As phone companies step up and try to block unwanted robocalls and illegal robocalls, this provides a safe harbor for those phone companies so that they don't get in trouble for blocking calls. That they shouldn't be blocking. The first safe harbor, which is the simplest one allows phone companies to use "reasonable analytics, including caller ID authentication information to identify and block illegal or unwanted calls from liability." The TCPA,the Telecommunications Privacy Act, prohibits robocallers from making calls to you if you don't want them, and if they don't have your consent. Consent usually has to be in writing and signed by you electronically (click to agree counts). The illegal robocalls could subject the company that's making the calls to TCPA liability. Thi

Tom Dunlap sits down with Tracy Pearson and Rolando Diaz of Dunlap, Bennett & Ludwig to discuss the unique aspects of the Delaware court system. Topics include the advantages of incorporating in Delaware, local counsel in Delaware, the Delaware bar process and advice for those looking to incoporate and practice in the state.

Today, a little bit of the lighter side of law. We're going to stay away from COVID. A federal judge dismissed a putative class action over Nestle Toll Houses Premier White Morsels. What happened here? Well, plaintiff's, a class action group, brought a lawsuit saying that Nestle's Toll House Premier White Morsels didn't actually contain chocolate. And that using the words white and premier, even though the product didn't contain cocoa or cocoa derivatives was deceptive to consumers. The district court judge said that Nestle doesn't even say the word chocolate on their label and they say Premier White Morsels and the word white alone, or morsel doesn't necessarily imply chocolate and nobody's deceived by this. 

Today, we're going to talk about COVID and coronavirus in the trademark world. Whenever there's a big news story or something that just entices the United States population, and in this case, the globe, in this case, it's coronavirus and COVID, and COVID-19, these are new terms that we've never heard before. And there's a huge misconception among the public that if you register something at the USPTO, you own it, and so there was a massive rush. I think more than 200 trademarks were filed since December 19th containing the words COVID or coronavirus. A couple problems with that, registering a trademark has to be associated with something that is sold in commerce, goods or services. Now, most of these trademark registrations are clothing registrations. So if you register something COVID and you put it on the front of a piece of clothing, that's not doing what trademarks do. That's an ornamental use of the mark. So key here, and this is just a good lesson for everybody out there, is trademarks identify the so

Today, we're going to talk about legal issues in the COVID-19 vaccine development arena. A big challenge from a legal perspective is how can these companies get the vaccine to us? Typically when you're developing a new vaccine or anything for use inside of a human being, the FDA under the FD and C Act, the Federal Food, Drug and Cosmetics act, and the Public Health Service Act regulates the development of vaccines and anything that gets injected into your body. And there's a good reason for that and typically it takes a long time. These companies have to go through a series of clinical trials and they have to produce results to the FDA and the FDA has to come back, but there is a provision of the FD and C Act called an EUA, Emergency Use Authorization, and let's see if this happens. For the FDA to issue this EUA, which basically allows temporarily the use of an unapproved product, or an approved product for unapproved uses, the FDA has to go through the secretary of Health and Human Services. And the secret

Tom Dunlap speaks with Phil Schwartz, attorney at Dunlap, Bennett and Ludwig, about what steps to take, shifts to make and liabilities to expect when employer strives for re-open.  

Today we're going to talk very briefly about online conferences and the potential loss of intellectual property rights and the risks that you face. In this new day and age of COVID-19 and Zoom conferences, people have been bombing Zoom conferences logging in when they don't have the right to, even password protected conferences get photobombed, like Zoombombed, I guess.  First, you might not always know who's in your Zoom conference. So it's a good idea offhand to ask everybody to introduce themselves and make sure that every little shiny group that's on the phone is accounted for. You know who everybody is. If you disclose something in a Zoom conference that's right now a company trade secret or one of your employees does, you could potentially lose that trade secret for good. Second, another thing that is happening in this day and age is people are sharing things online because they can't see each other and that can include inventions. And that might mean an almost instant loss of patent rights if you hap

A suspension was sought for a lawyer who lobbed insults at another lawyer during a deposition. It's funny because the lawyer in the deposition itself defended the insults that he lobbed in the civility of his legal practice by citing the President.  The conflict started, and this is according to an article in the ABA Journal from May 6, 2020, when an attorney named Cone instructed his client not to answer a question. And the attorney on the other side, a man named Hillison responded to his client that the question had to be certified, which is a process in a deposition where the question can be asked to a judge or a magistrate judge or whoever's handling the case in the courts question can be certified to that judge and the judge can decide whether or not the witness has to answer the question in a deposition. So when Hillison said, "Hey, certify this question, then if you're going to ask it." Cohn replied, "Okay, then certify your own stupidity at this point." Hillison replied, "Counsel, I'm not going to s

Tom Dunlap speaks remotely with Jenn Loges, of One Degree Capital, and Cherylyn Harley LeBon, of Dunlap Bennett & Ludwig, about the newly released SBA guidelines on loan forgiveness.

Today we're going to talk about the power grid. A new executive order from President Donald Trump is going to prohibit United States companies who work in the power grid from buying and putting in electrical equipment that has been made outside of the U.S. Worried about the threat of foreign countries willfully manipulating our power grid with "potentially catastrophic effects", this would present significant risks to our economy, human health and safety and would render the United States less capable of acting in defense of itself and allies. This executive order gives the Secretary of Energy 150 days from now (September of this year) to issue specific rules and identify the countries that are "adversaries", the countries where you couldn't buy equipment from.  American companies in U.S. allied countries, companies in U.S. allied countries now will likely have the only opportunity to supply power grid companies with that kind of material and supplies.

Tom Dunlap Chats remotely with Bruce Coombes, CEO of QuickFee about his business, using payment solutions for professional services during the pandemic and advice to aspiring entrepreneurs.

Today we're going to talk about a Supreme Court argument. The first one ever heard by telephone in the entire history of the United States Supreme Court. Due to the COVID-19 pandemic, the Supreme Court heard arguments on May 4th, 2020, in the case of the United States Patent and Trademark Office versus Booking.com. Booking.com says that the term Booking.com should not be considered generic. The United States Patent and Trademark Office, relying on a case from 1888, called Goodyear's India Rubber Glove Manufacturing Company versus the Goodyear Rubber Company. In 1888, the Supreme Court found that adding the word company to a name did not make that name unique and the name company, something generic, plus the word company left the mark generic. Booking.com is arguing that the addition of the.com or.org or something like that to the word booking in this case makes the term registrable at the USPTO. The Supreme Court Justices asked questions in terms of seniority, starting with the Chief Justice, who then acted

Today we're going to talk about employers and how they think about reopening as states start to reopen. Virginia's announced something called the Forward Virginia plan, which they'll start to loosen and reopen businesses in stages. California has something similar called the California's Roadmap to Pandemic Resilience. What these plans generally do is reopen businesses stage by stage. As instances of COVID-19 go down, fewer people are tested positive with it, there are fewer hospitalizations. As protective gear becomes more widely available, these states will ease up on their orders, and you can see those plans for those individual states online. Other states like Georgia have taken their own road to this. Georgia's opening rather rapidly. On April 27th, they're going to take the next step, which expanded that to in-store retail services, and dine-in restaurants, and movie theaters. Believe it or not, and it's already past that date now, retail store services, dine-in and movie theaters and shopping malls in

What is a notorious market? It's a term that's used to describe websites and physical marketplaces, both where there's large scale intellectual property infringement, particularly in the copyright and trademark space. Every year the United States trade representative, at least for a few years now, issues it's Review of Notorious Markets for Counterfeiting and Piracy. These are markets that the office has listed that it says harm U.S. businesses by counterfeiting goods either online or physically. Not surprisingly, a number of Chinese markets made the list including Taobao, owned by Alibaba, and DH Gate. But what was surprising was that Amazon made the list, at least Amazon's platforms in Canada, France, Germany, India, and the UK. The U.S. trade representative's report said that Amazon, at least in those country platforms, was not flagging bad vendors or setting sufficient procedures to keep counterfeiters and piraters off of these storefronts.

On today's episode Tom Dunlap has a virtual chat with John Whitbeck of WhitbeckBennett about an array of family issues and solutions during this trying time.

Cherylyn Harley LeBon is a partner and Ithi Joshi is an associate for Dunlap Bennett & Ludwig, practicing out of the Tysons Corner office. NOTE: Please see Part I of DBL coverage of the PPP here [Apr. 24, 2020 Tysons Corner]  It took less than 2 weeks to exhaust the PPP allocation of $349 billion. The White House and Senate finalized a second relief package of $484 billion earlier this week to replenish the first round of PPP funding. Unanimously approved pro forma by the Senate, it passed in the House on Thursday, and was signed by President Trump today. The new bill, called The Paycheck Protection Program and Health Care Enhancement Act (“CARES 2.0”) builds on the preexisting CARES Act and will inject more money into the economy to ensure that businesses can meet operating expenses and keep employees on the payroll. Democrats and Republicans were stuck in intense negotiations over what to include in the new relief package. Democrats pushed for a national testing strategy, while Republican lawmakers emp

The first three states to delay the July bar exam, California, Massachusetts and New York, and students in all of those states are pushing for something called an emergency diploma privilege. No decision's been made yet, but this emergency diploma privilege would essentially allow graduates of American Bar Association accredited law schools to start practicing law without taking the bar exam due to this COVID-19 and their inability to take the bar exam. New York is right now planning to push the bar exam out until fall as close to Labor Day as possible for example, but it's a big deal because the law students are planning their careers around that bar exam date and their admission. Obviously they can't practice law or do work as a lawyer until they're admitted to the bar, and in order to do that, they have to pass a bar exam. On the one hand, some of the bar exam organizers have pointed out that in many states, 15 to 20 percent of first time takers failed the exam, so admitting everybody to the bar without